fully

Welcome to the website of Inoue & Associates

Introductory Statement

Inoue & Associates (located within 1 minute walk from the Japan
Patent Office) is an intellectual property (IP) firm having more than 35 years of experience in international IP business.

We are a modest-sized IP firm composed of members
each having profound knowledge about the legal aspect of IP and the technologies involved therein as
well as excellent skill in actual IP practice,
such that high quality services can be offered constantly at a
reasonable price. Each one of our staff members is so trained as to be
able to always provide high quality IP-related services including production of documents having a clear and logical
construction whether they are in English or Japanese and irrespective of
urgency or technical difficulties involved in particular cases.

Over the years, we have built up a solid reputation for our ability to efficiently acquire
and protect IP rights in Japan.

We are confident that we can provide higher quality IP services than any other IP firms in Japan.

Features of Inoue & Associates

For acquiring and protecting patent rights, everything
starts from the claims and specification of a patent application or a granted patent. Whether a patent application can be granted
with a desired protective scope or a granted patent can survive the challenge from
a third party depends utterly on how good the claims and specification have been
drafted in the first place.

Invalidation of patents, unexpectedly narrow scope of
protection, defeat in infringement suit … all such undesired outcome could have
been avoided only if the patent application had been better drafted.

In the case of Japanese patent applications filed by
non-Japanese entities, the claims and specification are usually translations from
the non-Japanese texts of the first filed foreign applications or PCT
applications.

From this perspective, the translation of the patent
claims and specification is actually more than just a translation and is
practically tantamount to the preparation of a legal document which serves as a
basis for seeking patent protection. For
this reason, the translation should be done with utmost care by IP
professionals such as experienced patent attorneys or paralegals.

And that is what we do and is not done by most of the IP firms in Japan.

Problems related to traditional way of handling patent applications from outside Japan

In typical Japanese IP firms, applications from foreign clients are handled by a team of an IP professional (a patent attorney or a paralegal) and a translator.
For example, the translation of a PCT specification for the Japan
national phase entry is often carried out by one who is the least experienced
in the IP firm or even by an outside translator.

The IP professions work on legal matters based on the translations
prepared by translators which are not always so good or of a rather poor
quality in many cases. This manner of handling patents is disadvantageous not only from the aspect of efficiency but also from the aspect of cost
because poor translations of course make the entire procedure
unnecessarily complicated and high translation fees are required even
if the translations are not so good. Such inefficient and problematic
practice as mentioned above has become customary because many Japanese
IP professionals are not good at writing in English or even reading
English documents, and the English-to-Japanese translations are
generally assigned to beginners.

Consequently, many Japanese IP professionals have to rely on poor
translations in their works, thus falling into a vicious cycle. It is not
surprising even if patent applications from foreign clients are handled
by those who do not fully understand what is disclosed in the original specification nor the clients’ instructions given in
English during the prosecution of the application. For years, this has
been a serious problem as far as the patent applications from outside
Japan are concerned.

Our Solution

Such problems as mentioned above will never happen in
the case of Inoue & Associates. Every one of our staff members has
gone through very hard training and long actual experience to acquire
ability to handle the IP cases alone from drafting patent specifications
whether they are in Japanese or English to dealing with various
procedures relating to patent applications or registered patents. We do
not need and actually do not use any translator. Even in the case of
foreign patent applications (in US, EP etc.) filed by Japanese applicants through our firm, the
US or European patent attorneys often use our draft documents without
any substantial change. That is, the documents drafted by Inoue &
Associates as such are often submitted to the USPTO or the EPO.

There is no magic formula for acquiring good IP rights. This can be
achieved only by hard work and skill obtainable through long and rich
experience as always required in any fields for realizing high quality
services.

Inoue & Associates is one of the very limited number of Japanese IP
firms capable of constantly offering high
quality IP services at a reasonable price. There has been and will be no
compromise in the quality of services we provide to our clients and,
for this very reason, we have been trusted by many foreign clients as
well as domestic clients.

Our skill in IP business is highly esteemed by our clients including two
famous Japanese professors emeriti, Dr. Nobuatsu Watanabe and Dr.
Hidefumi Hirai, whose recommendations are shown in this web site.
Further, if requested, we will be able to show you copies of some
letters from various US and EP attorneys praising our abilities.

Our highly-skilled staff members will surely be of great help to your
establishment of strong and valuable intellectual property portfolio
while reducing cost.

If you are not sure, try us and we promise that we will never fall short of your expectations.
You will immediately realize that we are dedicated to efficient
acquisition and protection of your valuable intellectual properties and
have skills to achieve this goal.

Recommendations

Mr. Inoue, the Senior Partner, is my former student. He has both excellent linguistic ability and excellent expertise. The staff of Inoue & Associates are well-trained by Mr. Inoue, and the high quality services provided by Mr. Inoue and his staff are self-explanatory from the documents made by them. From my experience, I firmly believe that they will help you to promptly and surely acquire intellectual property rights, based on adequate judgment made by fully utilizing their professional skills in combination with their rich experience in pursuit of patent rights in many countries for many years.

Mr. Inoue, the Senior Partner, and his staff are familiar with foreign patent laws and patent practices. Further, the quality of their services based on accurate understanding of technical background and excellent linguistic ability is prominent in this business. In addition, Mr. Inoue already has his appropriate successor and I, therefore, trust Inoue & Associates for their excellent procedures of filing patent applications through reliable prosecutions for grant of patents.

Q. We understand that permissible claim
amendments are restricted after the issuance of a final rejection. Please explain about the restriction.

A. Permissible claim amendments are restricted after
the issuance of not only the Final Notice of Rejection, but also after the Decision
for Rejection. Further, this restriction
applies to a divisional application filed from a parent application filed on or
after April 1, 2007 and containing claims which can be rejected on the same
ground as the parent application.

The permissible amendments are (i) deletion
of a claim(s), (ii) amendment for limiting the scope of the invention without increasing
the number of claims, (iii) amendments for removing clerical errors, and (iv) amendments
for clarifying an unclear expression.
Other claim amendments are not permissible at this stage. For example, the following amendments are not
permissible even when the claims are fully supported by the specification as
filed:

(a) Addition of a new claim directed to a subject matter not described
in the claims;

(b) Addition of a new subclaim for limiting the
scope of an independent claim; and

(c) Amendment for changing the category of a
claim (such as, changing a product-by-process claim into a process claim).

Addition of a new subclaim is
permissible when the amendment is made for clarifying an unclear expression. For
example, when there is a claim reading “A composition containing X, preferably Y”,
amending this claim to “A composition containing X” and adding a subclaim reading
“Composition according to claim N, wherein said X is Y” will be permissible.